Benjamin S Fernandez

Practice Areas

Ben Fernandez is an intellectual property lawyer who possesses noteworthy subject matter and industry knowledge, and has experience in patent and trademark portfolio management, freedom to operate/competitive landscape and IP diligence. Drawing on 20 years of experience in intellectual property, his practice centers on helping companies navigate patent and trademark law complexities to achieve their business objectives. He leverages his extensive experience in managing US and international IP portfolios to advise clients on achieving the most strategic and valuable coverage possible and to develop formidable IP rights.

As part of Mr. Fernandez's freedom to operate/competitive landscape work, he has helped clients launching new products understand how to avoid, design around and license to minimize risk from competitors' patents. Mr. Fernandez is well-versed in both pre- and post-America Invents Act patent laws and has defended patents in USPTO post-grant proceedings.

Mr. Fernandez's practice spans a number of industries. He advises on medical device patents, including orthopedic implants, cardiac implants, limb orthotics, and communications systems/information technology between medical devices. He has handled matters in the energy and clean technology sectors, including algae growth, algae harvesting, and in-situ shale oil extraction.

His design patent practice focuses on retail products, including molded or injection molded products and fashion retail goods released on seasonal cycles. He also has significant patent experience in software, financial services, and telecommunications technologies.

In addition, Mr. Fernandez conducts intellectual property diligence for buyers, licensees and debtors, as well as sellers, licensors and creditors. He works closely with corporate colleagues to ensure a smooth and seamless IP diligence experience for the client.

Professional Memberships

Mr. Fernandez is the co-founder and chair of the steering committee for ProBoPat Colorado, a program that seeks to connect low-income Colorado inventors with Colorado patent professionals.

Admissions:

Colorado

US Patent and Trademark Office

Career

Prior to joining WilmerHale, Mr. Fernandez was a partner focusing on intellectual property at another firm in Denver, Colorado.

Publications

How Energy Firms Can Use the Defend Trade Secrets Act - Law360

Design Patent Post-Grant: Is Anticipation Easier to Prove than Obviousness? - Patent Trademark & Copyright Journal

Awards

Education

Languages Spoken

French